New matter in a patent application refers to any material that was not included in the original application. New matter can include new claims, amendments to the original description, or new drawings or data that were not included in the original application. 

Schedule a Free Patent Consultation with Patent Attorney Greg Carson

New Matter Cannot be Added after Filing a Patent Application

New matter is generally prohibited in patent applications. A patent application must only contain subject matter that was described in the original patent application filing. This means that once a patent application has been filed, the inventor cannot add any new information or make any new claims beyond what was originally disclosed.

This requirement is important because it ensures that the public can rely on the information contained in the patent application as a complete and accurate representation of the invention. It also prevents inventors from continually amending their applications in an attempt to obtain a broader scope of protection.

New matter is also not allowed when responding to an office action. You cannot use new matter to correct anything in a patent application, and you cannot add new matter in an amendment of any kind. 

This means that the first application (no matter what kind of application it is) must be complete, because you cannot add anything later. In other words, even a provisional patent application must fully support the claims that are added later when the non-provisional is filed. Read more about what patent pending means.

How to Add New Matter

There is one exception to the prohibitions against new matter. If an inventor wants to add new matter to a patent application after it has been filed, they may file a continuation-in-part (CIP) application. A CIP application is a type of patent application that allows the inventor to add new matter to their original application.

Here are the general steps to follow when filing a CIP application to add new matter to a patent application:

  1. Prepare the new material: The inventor must prepare the new material that they wish to add to the application. This can include new claims, drawings, and written descriptions of the invention.
  2. Determine if the new material is different: The inventor must determine if the new material is different from what was originally filed in the first patent application. If the new material is not different, it may be added to the original application as an amendment instead.
  3. File a CIP application: If the new material is different from what was originally filed, the inventor should file a CIP application. This application should include all of the original material from the first application as well as the new material. The inventor can file the CIP application at any time during the pendency of the original application.
  4. Meet formal requirements: The CIP application should meet all formal requirements for a patent application, including a specification, drawings, and claims. The inventor should also pay the appropriate filing fees.
  5. Go through examination process: The CIP application will be examined by the patent office to determine if the new material is patentable. If the new material is determined to be patentable, the inventor may be granted a patent that includes the original material from the first application as well as the new material added through the CIP application.
Patent Attorney help Communicating with the Patent Office

A CIP application allows an inventor to add new material to a patent application that was not included in the original application. However, the inventor should ensure that the new material is different from what was originally filed and that the CIP application meets all formal requirements and is properly examined by the patent office.

A CIP application will have a different priority date from the existing application. All of the subject matter disclosed in the earlier filing will maintain the earlier filing date in the CIP application. The new matter will receive a later priority date in the CIP application.

Patent Application Help

Carson Patents offers all patent application services necessary to seek patent protection for your invention. We provide online expert help for inventors from all over the world with U.S. and international patent applications for utility, plant, and design inventions. You can find out more information about specific patent application processes by checking out our what to expect in the utility patent application process page and our what to expect in the design patent application process page.

Patent Confidentiality: Invention disclosures to patent practitioners are covered by client controlled privilege. In other words, you are free to discuss the details your invention with a licensed patent practitioner, but with all others, you likely need a non-disclosure agreement (NDA).

Link to our Invention Intake Questions